Patent Prosecution Update

Size: px
Start display at page:

Download "Patent Prosecution Update"

Transcription

1 Patent Prosecution Update July 2010 After Bilski: The USPTO Response and Claim Drafting The Supreme Court recently announced its greatly anticipated decision in Bilski v. Kappos, No , 2010 WL (June 28, 2010). In the decision, the Court held that the machine-or-transformation test is not the sole test for determining whether process claims are eligible for patent protection. Slip op. at 8. Instead, the Court found that the machine-or-transformation test remains a useful and important clue... for determining whether some claimed inventions are processes under 35 U.S.C Id. More The EPO Clarifies the Methods of Treatment by Surgery Exclusion Article 53(c) of the European Patent Convention (EPC) excludes from patenting all methods for the treatment of the human or animal body by surgery. Recently, an Enlarged Board of Appeals (Board) of the European Patent Office (EPO) was asked to evaluate the patentability of certain magnetic resonance imaging methods in view of this Article. In re Medi-Physics, G 0001/07 at 4-10 (EPO Enlarged Board of Appeals 2010). More EPO Practice Tip As reported in the February 2010 edition of Full Disclosure, the European Patent Office (EPO) announced a number of changes to the European Patent Convention (EPC) effective April 1, The changes included amendments to Rule 161 EPC, which relate to responses to the Written Opinion or the International Preliminary Examination Report (IPER) of a PCT application. More Rule Review Read The Federal Circuit Says Read Did You Know? Read Events Patents and the Financial Services Industry Hosted by World Research Group 4th Annual U.S. Patent Litigation Training Program for Asian Corporations Hosted by Finnegan Articles U.S. Supreme Court Decides Fate of Three Key 101 Cases by Erika H. Arner, Charles T. Collins-Chase, and Justin R. Lowery Resources Webinar: What the Bilski Decision Means for Your IP Portfolio DISCLAIMER: The information contained herein is intended to convey general information only and should not be construed as a legal opinion or as legal advice. The firm disclaims liability for any errors or omissions and readers should not take any action that relies upon the information contained in this newsletter. You should consult your own lawyer concerning your own situation and any specific legal questions. This promotional newsletter does not establish any form of attorney-client relationship with our firm or with any of our attorneys.

2 After Bilski: The USPTO Response and Claim Drafting (cont d) Moreover, the Court encouraged the Federal Circuit s development of other limiting criteria consistent with the Patent Act and Supreme Court precedent. Id. at 16. The Court, however, was unable to find support in the Patent Act for a categorical exclusion of all business method inventions. Id. at 11. Although the U.S. Patent and Trademark Office (USPTO) has indicated that it will be issuing more complete guidance soon, the USPTO has responded to the Bilski decision for now by instructing its examiners to continue applying the machine-or-transformation test to determine whether an invention is a process under Section 101. Memorandum from Robert W. Bahr, Acting Associate Commissioner for Patent Examination Policy, U.S. Patent & Trademark Office, to the Patent Examining Corps (June 28, 2010), available at According to the USPTO s guidance, if a claimed method satisfies the test, the method is likely patent eligible unless there is a clear indication that the claimed method is directed to an abstract idea. Id. If, however, the claimed method fails the machine-or-transformation test, examiners are instructed to reject the claimed method under Section 101 unless it is clear that the claimed method is not directed to an abstract idea. Id. Despite the possibility of additional patent eligibility tests being created in the future, the USPTO currently intends to use the machine-or-transformation test as an initial gauge for the patent eligibility of processes. Accordingly, applicants should be sure to include a number of claims that clearly satisfy that test. To do so, applicants should ensure the claimed method is sufficiently tied to a machine or apparatus (e.g., computers or other devices) by including the machine or apparatus throughout the claim. A mere recitation of a machine or apparatus in a claim s preamble or a field-of-use limitation may not be sufficient. Instead, applicants may include limitations drawn to how the machine or apparatus performs steps of the claimed method and/or interaction between multiple machines. Alternatively, a claim may include one or more limitations drawn specifically to the transformative aspects of an invention. For example, a method claim may include a limitation claiming transformed data as a physical phenomena, such as, for example, a visual depiction. As another example, claims directed to diagnostic methods may include a step directed to administering a treatment to a patient or conducting a diagnostic test that transforms a test sample. Providing a claim with a number of transformative limitations makes clear to examiners that the claimed invention is not merely directed to an abstract idea or natural phenomenon. As a further alternative, applicants may include article-of-manufacture claims drawn to, for example, a computer program product including a computer usable medium having a computer readable program code embodied therein. Furthermore, pre-bilski guidance by the USPTO indicated that applicants should avoid limitations where a machine or transformation is only present in an insignificant extra-solution activity (i.e., an activity that is not central to the purpose of the invented method). For example, a mid-solution step of entering bids in

3 the record or a pre-solution step of performing a plurality of clinical laboratory tests on an individual may not be enough to pass the machine-or-transformation test. Stated differently, merely reciting a specific machine or a particular transformation of a specific article in an insignificant step, such as data gathering or outputting, is not sufficient to pass the test. Memorandum from John J. Love, Deputy Commissioner for Patent Examination Policy, U.S. Patent & Trademark Office, to Technology Center Directors and the Patent Examining Corps (Jan. 7, 2009), available at dapp/opla/documents/bilski_guidance_memo.pdf. Instead, applicants should ensure the use of a particular machine or the transformation of a particular article imposes a meaningful limit on the claim s scope.

4 The EPO Clarifies the Methods of Treatment by Surgery Exclusion (cont d) The Board s conclusions offer insight on the interpretation of Article 53(c) EPC and set out new approaches for determining whether inventions are excluded from patentability as methods of surgery. In the In re Medi-Physics case, the Board was asked to determine whether the claimed imaging method, which included a step of injecting a contrast agent into a patient s heart, was eligible for patent protection. Based on the reasons discussed below, the Board held that the claimed method was excluded from patentability because it was a method for treatment by surgery within the meaning of Article 53(c) EPC. In arriving at its decision, the Board refused to find that the exclusion of treatment by surgery is limited solely to purely therapeutic methods (i.e., directed to restoring or maintaining the health of the human or animal body). Id. at Stated differently, the Board found that surgery may encompass traditionally nontherapeutic procedures, such as, for example, sex-change operations, sterilization, or the operative removal of wrinkles. Id. at 23. Similarly, the Board also refused to find that the exclusion applied broadly to any non-insignificant intervention performed on the structure of an organism. The Board found that such a broad exclusion is now unjustifiable due to advances in nonmedical technologies (e.g., cosmetic and hair-removal procedures, tattooing, and piercing) requiring contact with the human body. Id. at Having rejected the narrow and broad definitions, the Board then sought an appropriate definition that allowed the exclusion to be effective but not stifling. The Board reasoned that the exclusion was intended to specifically [free] the medical profession from [the] constraints which would be imposed on them by patents granted on methods of surgical or therapeutic treatment. Id. at 60. The Board concluded that any definition of the term treatment by surgery must cover the kind of interventions which represent the core of the medical profession s activities, i.e., the kind of interventions for which their members are specifically trained and for which they assume a particular responsibility. Id. Thus, the Board held that methods involving an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise [are] excluded from patentability. Id. at 74. The Board, however, was unwilling to provide an authoritative once and for all definition of what the term treatment by surgery may comprise because of the ever-changing nature of medical technology. Id. at 63. Next, the Board confirmed that a multistep method may be ineligible for patent protection if the method contains a single step directed to treatment by surgery, as defined by the EPC. The Board, however, opined that exclusion under Article 53(c) EPC may be potentially avoided by specifically disclaiming any embodiments directed to surgery within the meaning of the EPC, provided the rest of the method claim complies with the requirements of the EPC. Id. at 68. The patentability of such inventions, however,

5 must necessarily be decided on a case-by-case basis. In addition, the Board announced that methods having diagnostic purposes should not be automatically excluded from patent protection merely because the method may be used during surgery. Id. at 74. The In re Medi-Physics case makes it clear that most standard surgical methods (i.e., methods involving an invasive physical intervention of the body by a medical expert) are still ineligible for patent protection. Methods involving only a minor intervention or no substantial health risk, however, may be eligible for patentability. The EPO s treatment of such methods, however, has yet to be determined.

6 EPO Practice Tip (cont d) In cases where the EPO acted as the International Searching Authority during the PCT stage, the amendments to Rule 161 EPC required a mandatory response to the Written Opinion or the IPER unless certain amendments were previously filed. If the required response was not filed within a one-month time period from the Rule 161 Communication, the applicant risked having its application lapse. A mandatory response is not required if amendments and/or comments were filed upon entry into the European national phase; amendments filed pursuant to Article 19 and/or 34 PCT were maintained on entry into the European national phase, provided these amendments were not considered in the issuance of an IPER; the Written Opinion or IPER was positive with respect to the claims; or a communication pursuant to Rule 161 had already issued before the rule changes became effective. We now have the benefit of a few months of EPO practice under new Rule 161. For applications where any amended documents (e.g., claim amendments designed to reduce extra claims fees) are filed upon entry into the European national phase, the EPO typically invites the applicant to comment on the Written Opinion. A response is not mandatory and the application will not lapse if no response is submitted. If, however, no amendments are filed upon national-phase entry, the EPO provides applicants with a onemonth period to correct all deficiencies noted in the Written Opinion or IPER. If the applicant fails to comply, the application will lapse. An appropriate response may include amendments and/or arguments similar to those filed in response to an office action. Although the one-month period is not extendable, a request for further processing may be available with the payment of suitable fees. The current EPO practice therefore typically treats applications filed with amended documents differently than those filed without any amendments. Although certain amendments, e.g., reducing claims or the inclusion of original claims at the end of a specification, may not address the deficiencies raised in a PCT Written Opinion, the EPO s practice appears to be based on an inability to efficiently determine whether amendments filed upon national-phase entry are responsive to the PCT objections. While it is possible that the EPO may change its practice in the future, applicants for the time being at least may eliminate the need to file a response to a Written Opinion or IPER by filing amended documents, e.g., amendments reducing the number of claims pending upon national-phase entry or making the claims consistent with those in another jurisdiction where prosecution has matured.

7 Rule Review Rules and (collectively the Rules ) set forth the requirements for a request for reexamination. Though the Rules relate to ex parte and inter partes reexamination respectively, they include many of the same substantive requirements. Thus, for the purposes of this article, the Rules are reviewed collectively. Compliance with the Rules will highlight information relevant to the examiner s decision whether to grant reexamination. In addition to several technical requirements, such as, e.g., including the required fee, identifying every claim for which reexamination is requested, and providing copies of the cited references, the Rules require (1) a statement pointing out each substantial new question (SNQ) of patentability based on the cited references, and (2) a detailed explanation of the pertinency and manner of applying those references to every claim for which reexamination is requested. A statement pointing out an SNQ is a concise statement that identifies a new, noncumulative technical feature of a reference and explains why the feature is a new teaching that should have been considered. The new technological teaching may be presented by, e.g., discussing the subject matter of the cited reference that relates to at least one claim limitation and provides a teaching that was not considered in the prior examination. At least one reference cited in each proposed rejection must provide a new, noncumulative technological teaching. Furthermore, the request must state an SNQ for every claim for which reexamination is requested. According to the USPTO, many defective requests do not distinguish the SNQ from the proposed rejections. To avoid a defective request, the SNQ should be limited to the new teaching in the cited reference, and should be distinct from the identification and explanation of the proposed rejections. The focus should be on the specific features of the reference, and requesters should refrain from adding extraneous material such as general recitations of the law. The detailed explanation of how the cited references apply to the claims is a proposed rejection based on the new technological teaching. Each proposed rejection, e.g., anticipation, should have a separate explanation stating how the references apply to every claim limitation for each claim to which the proposed rejection is applied. The detailed explanation may be presented by either a claim chart or a narrative. The USPTO, however, cautions against including both because doing so may lengthen the request and introduce inconsistencies. According to the USPTO, [p]roposed rejections that clearly and concisely identify and provide support for a prima facie case of unpatentability are more likely to be adopted by [an] examiner. Best Practices and FAQs for filing requests for reexamination compliant with 37 CFR and 1.915, at 17 (2010), _for_filing_reexaminations_5_10_10.pdf. However, [e]xplanations that are incomplete, unclear, or confusing may result in [an] examiner not adopting the proposed rejection or not understanding the requester s position on how the references are applied to the claim limitations. Id.

8 The USPTO finds many requests defective because they either (1) do not explain how some of the references apply to the claim limitations or (2) group references or statutory bases of rejections in a way that does not clearly identify what rejections are proposed by the third party requesters, or what applications of the art are proposed by patent owner requesters. Id. at 15. The USPTO suggests citing to only those references identified as a basis for a proposed rejection (or applied to the claims in the case of a patent owner s request for reexamination). Further, obviousness and anticipation rejections should be proposed separately and not lumped together using and/or terminology. On the other hand, requesters may apply one ground of rejection to multiple claims grouped together. Additional guidance for preparing requests for reexaminations that comply with the Rules may be found in the Best Practices and FAQs for filing requests for reexamination compliant with 37 CFR and (2010), reexaminations_5_10_10.pdf.

9 The Federal Circuit Says Patentees may violate the rule against recapture by claiming subject matter in a reissue patent that was surrendered during the prosecution of a related patent application. In MBO Laboratories, Inc. v. Becton, Dickinson & Co., No (Fed. Cir. Apr. 12, 2010), the Federal Circuit found that certain claims of U.S. Reissue Patent No. 36,885 (the 885 reissue patent), owned by MBO Laboratories, Inc. (MBO), were invalid for recapturing previously surrendered subject matter. The technology of the 885 reissue patent related to a design for a hypodermic safety syringe. The design protected against needle-stick injuries by slidably retracting a contaminated needle into a fixed protective guard after the needle is removed from a patient. The 885 reissue patent is a reissue of U.S. Patent No. 5,755,699 (the 699 patent), which is part of a larger U.S. patent family. During prosecution of related family members, MBO made numerous assertions to overcome prior art rejections. In particular, the Court found that MBO overcame art rejections in one related patent by asserting that [a] chief feature of [the] invention, inter alia, is... the safe retraction of the needle or cannula... into the tubular member.... Slip op. at 4-5. The Court then found that MBO overcame prior art rejections during prosecution of another related patent by explaining that the applied reference disclosed a needle... fixed to and extending from a conventional syringe barrel.... The needle is not slidably received in the barrel. Id. at 5. The Court also found that MBO, in a parent application, once again distinguished the applied references by explaining that its needle is slidable into the disclosed guard body. Despite these assertions, MBO sought to reissue the 699 patent, alleging that it was entitled to claim a system having any relative movement between the needle and the body, not just a system wherein the needle must be bodily moved toward the safety device. Id. at 7. On appeal, the Federal Circuit affirmed the lower court s finding that certain claims of the 885 reissue patent violated the rule against recapture. The Court found that MBO was not entitled to claim all relative movement between the needle and guard body, as this subject matter was specifically surrendered during prosecution. Indeed, the Court noted that substantial evidence supported the lower court s finding of MBO clearly surrendering the rights to claim a guard body that moved relative to a fixed needle. To support its holding, the Federal Circuit reasoned that the rule against recapture only entitles a patentee to a reissue patent for broader claims when the patentee claimed less than he/she had a right to claim in the patent through error without any deceptive intent, not through deliberate amendments or arguments designed to procure allowance of claims. In the present case, the Court found that MBO had previously attempted to claim relative movement between a needle and an associated guard body in a related application. The Court also found that MBO had deliberately surrendered this subject matter in an effort to overcome prior art rejections. Thus, the Court concluded that deliberate surrender of subject matter is not an error of the kind that will justify the granting of a reissue patent drawn to the surrendered subject matter. Id. at 11. Furthermore, the Federal Circuit clarified that a patentee may violate the rule against recapture by

10 claiming subject matter in a reissue patent that the patentee surrendered while prosecuting a related application. Id. at 16. Citing to similar policy goals governing the doctrine of prosecution history estoppel, the Court reasoned that equity requires a review of a patent family s entire prosecution history in order to prevent patentees from encroaching back into territory previously dedicated to the public. Id. at 20. To avoid inadvertently drafting claims that may be invalidated for violating the rule against recapture, applicants for reissue patents should review the prosecution histories of the entire patent family to ensure that the proposed reissue claims do not claim previously surrendered subject matter. Applicants should pay particular attention to the amendments and arguments submitted to overcome prior art rejections.

11 Did You Know? In another effort to reduce backlog, the United States Patent and Trademark Office (USPTO) recently expanded the Application Exchange Program (Program) to include large entities. As originally implemented, the Program afforded small-entity applicants with more than one application, filed prior to the inception of the Program, an opportunity to seek expedited examination of one application in exchange for the withdrawal of an unexamined application. Recently, however, the USPTO expanded the Program to include large and small entities alike, and extended the duration of the Program to December 31, The USPTO further limited an entity s participation in the Program to fifteen (15) applications. Additional information on the recent expansion can be found at Applicants frustrated with the backlogs at the USPTO may find the expanded Program useful for expediting the prosecution of, for example, commercially significant applications.

Patent Prosecution Update

Patent Prosecution Update Patent Prosecution Update March 2012 Contentious Proceedings at the USPTO Under the America Invents Act by Rebecca M. McNeill The America Invents Act of 2011 (AIA) makes significant changes to contentious

More information

PTO Publishes Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101 in View of In Re Bilski

PTO Publishes Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101 in View of In Re Bilski PTO Publishes Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101 in View of In Re Bilski Stuart S. Levy[1] Overview On August 24, 2009, the Patent and Trademark

More information

HOW TO EVALUATE WHEN A REISSUE VIOLATES THE RECAPTURE RULE:

HOW TO EVALUATE WHEN A REISSUE VIOLATES THE RECAPTURE RULE: HOW TO EVALUATE WHEN A REISSUE VIOLATES THE RECAPTURE RULE: #8 Collected Case Law, Rules, and MPEP Materials 2004 Kagan Binder, PLLC How to Evaluate When a Reissue violates the Recapture Rule: Collected

More information

Policies of USPTO Director Kappos & U.S. Patent Law Reform

Policies of USPTO Director Kappos & U.S. Patent Law Reform Policies of USPTO Director Kappos & U.S. Patent Law Reform December 15, 2011 Speaker: Ron Harris The Harris Firm ron@harrispatents.com The USPTO Under Director David Kappos USPTO Director David Kappos

More information

Delain Law Office, PLLC

Delain Law Office, PLLC Delain Law Office, PLLC Patent Prosecution and Appeal Tips From PTO Day, December 5, 2005 Nancy Baum Delain, Esq. Registered Patent Attorney Delain Law Office, PLLC Clifton Park, NY http://www.ipattorneyfirm.com

More information

Application Drafting and Provisional Applications

Application Drafting and Provisional Applications Application Drafting and Provisional Applications Scott W. Cummings Partner T +1 202 408 6400 scott.cummings@dentons.com dentons.com What is the Goal of a Patent Application? To obtain a patent for the

More information

The New Post-AIA World

The New Post-AIA World Finnegan, Henderson, Farabow, Garrett & Dunner, LLP The New Post-AIA World New Ways to Challenge a US Patent or Patent Application Erika Arner FICPI ABC 2013 Conference New Orleans, LA 0 Third Party Patent

More information

OLIVE & OLIVE, P.A. INTELLECTUAL PROPERTY LAW

OLIVE & OLIVE, P.A. INTELLECTUAL PROPERTY LAW OLIVE & OLIVE, P.A. INTELLECTUAL PROPERTY LAW Since 1957 500 MEMORIAL ST. POST OFFICE BOX 2049 DURHAM, NORTH CAROLINA 27702-2049 (919) 683-5514 GENERAL RULES PERTAINING TO PATENT INFRINGEMENT Patent infringement

More information

PATENT DISCLOSURE: Meeting Expectations in the USPTO

PATENT DISCLOSURE: Meeting Expectations in the USPTO PATENT DISCLOSURE: Meeting Expectations in the USPTO Robert W. Bahr Acting Associate Commissioner for Patent Examination Policy United States Patent and Trademark Office 11/17/2016 1 The U.S. patent system

More information

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. ALLSCRIPTS HEALTHCARE SOLUTIONS, INC.

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. ALLSCRIPTS HEALTHCARE SOLUTIONS, INC. Trials@uspto.gov Paper 20 571.272.7822 Entered: August 26, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ALLSCRIPTS HEALTHCARE SOLUTIONS, INC., Petitioner, v.

More information

Factors That May Weigh In Favor Of, Or Against, Patentability

Factors That May Weigh In Favor Of, Or Against, Patentability CLIENT MEMORANDUM U.S. PATENT OFFICE PUBLISHES GUIDELINES FOR DETERMINING WHETHER PROCESS CLAIMS COVER ELIGIBLE SUBJECT MATTER IN THE WAKE OF THE SUPREME COURT S BILSKI DECISION The United States Patent

More information

The EPO Enlarged Board of Appeal decides on dosage regimens (G2/08) and treatment by surgery (G1/07)

The EPO Enlarged Board of Appeal decides on dosage regimens (G2/08) and treatment by surgery (G1/07) The EPO Enlarged Board of Appeal decides on dosage regimens (G2/08) and treatment by surgery (G1/07) Dr. Benjamin Quest and Dr. Franz-Josef. Zimmer The two recent decisions of the Enlarged Board of Appeal

More information

Bilski Guidance to Examiners; What Attorneys Should Know. Stuart S. Levy Of Counsel Sughrue Mion, PLLC

Bilski Guidance to Examiners; What Attorneys Should Know. Stuart S. Levy Of Counsel Sughrue Mion, PLLC Bilski Guidance to Examiners; What Attorneys Should Know Stuart S. Levy Of Counsel Sughrue Mion, PLLC 1 PTO Announces Interim Guidance On July 27, 2010, Robert Barr, Acting Associate Commissioner for Patent

More information

2011 Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome Models used are not clients but may be representative

2011 Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome Models used are not clients but may be representative 2011 Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome Models used are not clients but may be representative of clients 321 N. Clark Street, Suite 2800, Chicago,

More information

Patent Prosecution in View of The America Invents Act. Overview

Patent Prosecution in View of The America Invents Act. Overview Patent Prosecution in View of The America Invents Act Courtenay C. Brinckerhoff David Dutcher Paul S. Hunter 2 Overview First-To-File (new 35 U.S.C. 102) Derivation Proceedings New Proceedings For Patent

More information

IP CONCLAVE 2010, MUMBAI STRATEGIES WITH US PATENT PRACTICE NAREN THAPPETA US PATENT ATTORNEY & INDIA PATENT AGENT BANGALORE, INDIA

IP CONCLAVE 2010, MUMBAI STRATEGIES WITH US PATENT PRACTICE NAREN THAPPETA US PATENT ATTORNEY & INDIA PATENT AGENT BANGALORE, INDIA IP CONCLAVE 2010, MUMBAI STRATEGIES WITH US PATENT PRACTICE NAREN THAPPETA US PATENT ATTORNEY & INDIA PATENT AGENT BANGALORE, INDIA www.iphorizons.com Not legal Advise! Broad Organization A. Pre filing

More information

Correction of Patents

Correction of Patents Correction of Patents Seema Mehta Kelly McKinney November 9, 2011 Overview: Three Options Certificate of Correction Reissue Reexamination in view of the America Invents Act (AIA) Certificate of Correction

More information

Federal Circuit Addresses Recapture Rule in Patent Reissue Proceedings

Federal Circuit Addresses Recapture Rule in Patent Reissue Proceedings May 21, 2012 Practice Group: IP Procurement and Portfolio Management Federal Circuit Addresses Recapture Rule in Patent By Mark R. Leslie and Christopher G. Wolfe In its May 8 opinion In re Youman 1, the

More information

CA/PL 7/99 Orig.: German Munich, SUBJECT: Revision of the EPC: Articles 52(4) and 54(5) President of the European Patent Office

CA/PL 7/99 Orig.: German Munich, SUBJECT: Revision of the EPC: Articles 52(4) and 54(5) President of the European Patent Office CA/PL 7/99 Orig.: German Munich, 2.3.1999 SUBJECT: Revision of the EPC: Articles 52(4) and 54(5) DRAWN UP BY: ADDRESSEES: President of the European Patent Office Committee on Patent Law (for opinion) SUMMARY

More information

USPTO Implementation of the America Invents Act. Janet Gongola Patent Reform Coordinator Direct dial:

USPTO Implementation of the America Invents Act. Janet Gongola Patent Reform Coordinator Direct dial: USPTO Implementation of the America Invents Act Janet Gongola Patent Reform Coordinator Janet.Gongola@uspto.gov Direct dial: 571-272-8734 Three Pillars of the AIA 11/30/2011 2 Speed Prioritized examination

More information

Amendments in Europe and the United States

Amendments in Europe and the United States 13 Euro IP ch2-6.qxd 15/04/2009 11:16 Page 90 90 IP FIT FOR PURPOSE Amendments in Europe and the United States Attitudes differ if you try to broaden your claim after applications, reports Annalise Holme.

More information

America Invents Act: Patent Reform

America Invents Act: Patent Reform America Invents Act: Patent Reform Gunnar Leinberg, Nicholas Gallo, and Gerald Gibbs LeClairRyan December 2011 gunnar.leinberg@leclairryan.com; nicholas.gallo@leclaairryan.com; and gerald.gibbs@leclairryan.com

More information

Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 Ex Parte Miguel A. Estrada, Joseph A. Russo, and Thomas M.

Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 Ex Parte Miguel A. Estrada, Joseph A. Russo, and Thomas M. 2010 WL 3389278 (Bd.Pat.App. & Interf.) Page 1 2010 WL 3389278 (Bd.Pat.App. & Interf.) Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 Ex Parte Miguel A. Estrada, Joseph

More information

The use of prosecution history in post-grant patent proceedings

The use of prosecution history in post-grant patent proceedings Question Q229 National Group: United States Title: The use of prosecution history in post-grant patent proceedings Contributors: ADAMO, Kenneth R. ARROYO, Blas ASHER, Robert BAIN, Joseph MEUNIER, Andrew

More information

Supreme Court Decision on Scope of Patent Protection

Supreme Court Decision on Scope of Patent Protection Supreme Court Decision on Scope of Patent Protection Supreme Court Holds Pharmaceutical Treatment Method Without Inventive Insight Unpatentable as a Law of Nature SUMMARY In a decision that is likely to

More information

The America Invents Act : What You Need to Know. September 28, 2011

The America Invents Act : What You Need to Know. September 28, 2011 The America Invents Act : What You Need to Know September 28, 2011 Presented by John B. Pegram J. Peter Fasse 2 The America Invents Act (AIA) Enacted September 16, 2011 3 References: AIA = America Invents

More information

CORRECTION OF ISSUED PATENTS

CORRECTION OF ISSUED PATENTS CORRECTION OF ISSUED PATENTS 2012 IP Summer Seminar Peter Corless Partner pcorless@edwardswildman.com July 2012 2012 Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP Types of Correction Traditional

More information

United States Court of Appeals for the Federal Circuit

United States Court of Appeals for the Federal Circuit United States Court of Appeals for the Federal Circuit 00-1159 (Interference No. 102,854) IN RE ROEMER Boris Haskell, Paris and Haskell, of Arlington, Virginia, argued for appellants. William LaMarca,

More information

How Sequenom Lost Patent Protection For Fetal DNA Test

How Sequenom Lost Patent Protection For Fetal DNA Test Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com How Sequenom Lost Patent Protection For Fetal DNA

More information

PROCEDURES FOR INVALIDATING, CLARIFYING OR NARROWING A PATENT IN THE PATENT OFFICE UNDER THE AMERICA INVENTS ACT (AIA)

PROCEDURES FOR INVALIDATING, CLARIFYING OR NARROWING A PATENT IN THE PATENT OFFICE UNDER THE AMERICA INVENTS ACT (AIA) I. Prior to AIA, there were two primary ways for a third party to invalidate a patent in the patent office: A. Interference under 35 U.S.C. 135 & 37 C.F.R. 41.202, which was extremely limited, as it required:

More information

4. COMPARISON OF THE INDIAN PATENT LAW WITH THE PATENT LAWS IN U.S., EUROPE AND CHINA

4. COMPARISON OF THE INDIAN PATENT LAW WITH THE PATENT LAWS IN U.S., EUROPE AND CHINA 4. COMPARISON OF THE INDIAN PATENT LAW WITH THE PATENT LAWS IN U.S., EUROPE AND CHINA Provisions of the Indian patent law were compared with the relevant provisions of the patent laws in U.S., Europe and

More information

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF OHIO EASTERN DIVISION ) ) ) ) ) ) ) ) ) ) )

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF OHIO EASTERN DIVISION ) ) ) ) ) ) ) ) ) ) ) UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF OHIO EASTERN DIVISION BENDIX COMMERCIAL VEHICLE SYSTEMS, et al., Plaintiffs, v. HALDEX BRAKE PRODUCTS CORPORATION, Defendant. Case No. 1:09-CV-0176 JUDGE

More information

Suzannah K. Sundby. canady + lortz LLP. David Read. Differences between US and EU Patent Laws that Could Cost You and Your Startup.

Suzannah K. Sundby. canady + lortz LLP. David Read. Differences between US and EU Patent Laws that Could Cost You and Your Startup. Differences between US and EU Patent Laws that Could Cost You and Your Startup Suzannah K. Sundby United States canady + lortz LLP Europe David Read UC Center for Accelerated Innovation October 26, 2015

More information

How patents work An introduction for law students

How patents work An introduction for law students How patents work An introduction for law students 1 Learning goals The learning goals of this lecture are to understand: the different types of intellectual property rights available the role of the patent

More information

United States Court of Appeals for the Federal Circuit

United States Court of Appeals for the Federal Circuit United States Court of Appeals for the Federal Circuit 2007-1539 PREDICATE LOGIC, INC., Plaintiff-Appellant, v. DISTRIBUTIVE SOFTWARE, INC., Defendant-Appellee. Christopher S. Marchese, Fish & Richardson

More information

pct2ep.com Guide to claim amendment after EPO regional phase entry

pct2ep.com Guide to claim amendment after EPO regional phase entry pct2ep.com Guide to claim amendment after EPO regional phase entry Claim amendments in the EPO Guide to the issues to consider After a PCT application enters the EPO regional phase, and before any search

More information

GLOSSARY of patent related terms in the FOUR OFFICE STATISTICS REPORT 2010 EDITION

GLOSSARY of patent related terms in the FOUR OFFICE STATISTICS REPORT 2010 EDITION GLOSSARY of patent related terms in the FOUR OFFICE STATISTICS RRT 2010 EDITION Disclaimer: The explanations in this glossary are given in order to help readers of the Four Office Statistics Report in

More information

Part IV: Supplemental Examination

Part IV: Supplemental Examination Strategic Considerations in View of the USPTO s Proposed Rules Part IV: Supplemental Examination Presented By: Sam Woodley & Irene Hudson Fish & Richardson AIA Webinar Series Date March 27, 2012 April

More information

US Supreme Court Issues Important Opinion on Patent Eligibility of Computer- Implemented Inventions

US Supreme Court Issues Important Opinion on Patent Eligibility of Computer- Implemented Inventions US Supreme Court Issues Important Opinion on Patent Eligibility of Computer- Implemented Inventions Andy Pincus Partner +1 202 263 3220 apincus@mayerbrown.com Stephen E. Baskin Partner +1 202 263 3364

More information

Seeking Patent Protection for Business-Related and Computer-Related Inventions After Bilski

Seeking Patent Protection for Business-Related and Computer-Related Inventions After Bilski Seeking Patent Protection for Business-Related and Computer-Related Inventions After Bilski - CELESQ -WEST IP Master Series, November 17, 2008 Author(s): Charles R. Macedo CELESQ -WEST IP Master Series

More information

United States Court of Appeals for the Federal Circuit

United States Court of Appeals for the Federal Circuit United States Court of Appeals for the Federal Circuit 2006-1062 MBO LABORATORIES, INC., Plaintiff-Appellant, v. BECTON, DICKINSON & COMPANY, Defendant-Appellee. John M. Skenyon, Fish & Richardson P.C.,

More information

AIPPI World Intellectual Property Congress, Toronto. Workshop V. Patenting computer implemented inventions. Wednesday, September 17, 2014

AIPPI World Intellectual Property Congress, Toronto. Workshop V. Patenting computer implemented inventions. Wednesday, September 17, 2014 AIPPI World Intellectual Property Congress, Toronto Workshop V Patenting computer implemented inventions Wednesday, September 17, 2014 Implications of Alice Corp. v. CLS Bank (United States Supreme Court

More information

UNITED STATES PATENT AND TRADEMARK OFFICE. REPORT TO CONGRESS on INTER PARTES REEXAMINATION. Executive Summary

UNITED STATES PATENT AND TRADEMARK OFFICE. REPORT TO CONGRESS on INTER PARTES REEXAMINATION. Executive Summary UNITED STATES PATENT AND TRADEMARK OFFICE REPORT TO CONGRESS on INTER PARTES REEXAMINATION Executive Summary The United States Patent and Trademark Office (USPTO) examines patent applications and grants

More information

Inequitable Conduct Judicial Developments

Inequitable Conduct Judicial Developments Inequitable Conduct Judicial Developments Duke Patent Law Institute May 16, 2013 Presented by Tom Irving Copyright Finnegan 2013 Disclaimer These materials are public information and have been prepared

More information

America Invents Act (AIA) Post-Grant Proceedings

America Invents Act (AIA) Post-Grant Proceedings America Invents Act (AIA) Post-Grant Proceedings Various Post-Grant Proceedings under AIA Ex parte reexamination Modified by AIA Sec. 6(h)(2) Continue to be available under AIA Inter partes reexamination

More information

America Invents Act H.R (Became Law: September 16, 2011) Michael K. Mutter Birch, Stewart, Kolasch & Birch October 11-12, 2011

America Invents Act H.R (Became Law: September 16, 2011) Michael K. Mutter Birch, Stewart, Kolasch & Birch   October 11-12, 2011 America Invents Act H.R. 1249 (Became Law: September 16, 2011) Michael K. Mutter Birch, Stewart, Kolasch & Birch www.bskb.com October 11-12, 2011 H.R. 1249 became law Sept. 16, 2011 - Overview first inventor

More information

(SUCCESSFUL) PATENT FILING IN THE US

(SUCCESSFUL) PATENT FILING IN THE US (SUCCESSFUL) PATENT FILING IN THE US February 26th, 2014 Pankaj Soni, Partner www.remfry.com The America Invents Act (AIA) The America Invents Act, enacted in law on September 16, 2011 Represents a significant

More information

Disclaimers at the EPO

Disclaimers at the EPO Introduction Enlarged Board of Appeal ("EBA") decision G 2/10 (August 2011) sought to clarify a previously existing divergence of interpretation as to the general question of when a disclaimer may be validly

More information

Should Patent Prosecution Bars Apply To Interference Counsel? 1. Charles L. Gholz 2. and. Parag Shekher 3

Should Patent Prosecution Bars Apply To Interference Counsel? 1. Charles L. Gholz 2. and. Parag Shekher 3 Should Patent Prosecution Bars Apply To Interference Counsel? 1 By Charles L. Gholz 2 and Parag Shekher 3 Introduction The Federal Circuit stated that it granted a rare petition for a writ of mandamus

More information

United States District Court

United States District Court Case:0-cv-0-JSW Document Filed0// Page of KLAUSTECH, INC., IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA 0 Plaintiff, No. C 0-0 JSW v. ADMOB, INC., Defendant. / ORDER DENYING

More information

Post-Grant Proceedings in the USPTO

Post-Grant Proceedings in the USPTO Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Post-Grant Proceedings in the USPTO Erika Arner Advanced Patent Law Institute, Palo Alto, CA December 12, 2013 0 Post-Grant Proceedings New AIA proceedings

More information

PATENT ACTIVITY AT THE IP5 OFFICES

PATENT ACTIVITY AT THE IP5 OFFICES Chapter 4 PATENT ACTIVITY AT THE IP5 OFFICES This chapter presents trends in patent application filings and grants at the IP5 Offices only. While in Chapter 3 the latest data were for 2012, most of the

More information

AIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, A Web conference hosted by Foley & Lardner LLP

AIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, A Web conference hosted by Foley & Lardner LLP AIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, 2012 A Web conference hosted by Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome

More information

New Post Grant Proceedings: Basics by

New Post Grant Proceedings: Basics by New Post Grant Proceedings: Basics by Tom Irving Copyright Finnegan 2013 May 14, 2013 Disclaimer These materials are public information and have been prepared solely for educational and entertainment purposes

More information

Navigating through the Obviousness-Type Double Patenting Minefield Landslide Vol. 10, No. 3 January/February 2018

Navigating through the Obviousness-Type Double Patenting Minefield Landslide Vol. 10, No. 3 January/February 2018 Navigating through the Obviousness-Type Double Patenting Minefield Landslide Vol. 10, No. 3 January/February 2018 Elizabeth A Doherty, PhD 925.231.1991 elizabeth.doherty@mcneillbaur.com Amelia Feulner

More information

America Invents Act Implementing Rules. September 2012

America Invents Act Implementing Rules. September 2012 America Invents Act Implementing Rules September 2012 AIA Rules (Part 2) Post Grant Review Inter Partes Review Section 18 Proceedings Derivation Proceedings Practice before the PTAB 2 Post Grant Review

More information

Prometheus v. Mayo. George R. McGuire. Bond, Schoeneck & King PLLC June 6, 2012

Prometheus v. Mayo. George R. McGuire. Bond, Schoeneck & King PLLC June 6, 2012 George R. McGuire Bond, Schoeneck & King PLLC June 6, 2012 gmcguire@bsk.com 1 Background The Decision Implications The Aftermath Questions 2 Background Prometheus & Mayo The Patents-At-Issue The District

More information

Section 102: A Dead Letter For Qualifying Claims

Section 102: A Dead Letter For Qualifying Claims Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com Section 102: A Dead Letter For Qualifying Claims Law360,

More information

A Survey Of Patent Owner Estoppel At USPTO

A Survey Of Patent Owner Estoppel At USPTO Portfolio Media. Inc. 111 West 19 th Street, 5th Floor New York, NY 10011 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com A Survey Of Patent Owner Estoppel At USPTO

More information

INTER PARTES REEXAMINATION MECHANICS AND RESULTS

INTER PARTES REEXAMINATION MECHANICS AND RESULTS INTER PARTES REEXAMINATION MECHANICS AND RESULTS Eugene T. Perez Birch, Stewart, Kolasch & Birch, LLP Gerald M. Murphy, Jr. Birch, Stewart, Kolasch & Birch, LLP Leonard R. Svensson Birch, Stewart, Kolasch

More information

Plausible Indefiniteness: High Time for More Definite Patent Claims? By S. Stuart Lee and Ayan M. Afridi 1. As published in IPLaw 360 April 16, 2009

Plausible Indefiniteness: High Time for More Definite Patent Claims? By S. Stuart Lee and Ayan M. Afridi 1. As published in IPLaw 360 April 16, 2009 Plausible Indefiniteness: High Time for More Definite Patent Claims? By S. Stuart Lee and Ayan M. Afridi 1 As published in IPLaw 360 April 16, 2009 Recently, the U.S. Patent and Trademark Office Board

More information

America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary

America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary PRESENTATION TITLE America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary Christopher M. Durkee James L. Ewing, IV September 22, 2011 1 Major Aspects of Act Adoption of a first-to-file

More information

COMMENTS OF THE ELECTRONIC FRONTIER FOUNDATION REGARDING CROWDSOURCING AND THIRD-PARTY PREISSUANCE SUBMISSIONS. Docket No.

COMMENTS OF THE ELECTRONIC FRONTIER FOUNDATION REGARDING CROWDSOURCING AND THIRD-PARTY PREISSUANCE SUBMISSIONS. Docket No. COMMENTS OF THE ELECTRONIC FRONTIER FOUNDATION REGARDING CROWDSOURCING AND THIRD-PARTY PREISSUANCE SUBMISSIONS Docket No. PTO P 2014 0036 The Electronic Frontier Foundation ( EFF ) is grateful for this

More information

Annex 2 DEFINITIONS FOR TERMS AND FOR STATISTICS ON PROCEDURES

Annex 2 DEFINITIONS FOR TERMS AND FOR STATISTICS ON PROCEDURES DEFINITIONS FOR TERMS AND FOR STATISTICS ON PROCEDURES This annex contains firstly definitions of the main terms used in the report 51. After that there is an explanation of the patent procedures relating

More information

AIA Post-Grant Proceedings: Lessons Learned from PTAB and Federal Circuit Decisions

AIA Post-Grant Proceedings: Lessons Learned from PTAB and Federal Circuit Decisions AIA Post-Grant Proceedings: Lessons Learned from PTAB and Federal Circuit Decisions Christopher Persaud, J.D., M.B.A. Patent Agent/Consultant Patent Possibilities Tyler McAllister, J.D. Attorney at Law

More information

Supreme Court Invites Solicitor General s View on Safe Harbor of the Hatch-Waxman Act

Supreme Court Invites Solicitor General s View on Safe Harbor of the Hatch-Waxman Act Supreme Court Invites Solicitor General s View on Safe Harbor of the Hatch-Waxman Act Prepared By: The Intellectual Property Group On June 25, 2012, the United States Supreme Court invited the Solicitor

More information

Considerations for the United States

Considerations for the United States Considerations for the United States Speaker: Donald G. Lewis US Patent Attorney California Law Firm Leahy-Smith America Invents Act First Inventor to file, with grace period Derivation Actions Prior user

More information

INTELLECTUAL PROPERTY LAWS AMENDMENT (RAISING THE BAR ACT) 2012

INTELLECTUAL PROPERTY LAWS AMENDMENT (RAISING THE BAR ACT) 2012 INTELLECTUAL PROPERTY LAWS AMENDMENT (RAISING THE BAR ACT) 2012 AUTHOR: MICHAEL CAINE - PARTNER, DAVIES COLLISON CAVE Michael is a fellow and council member of the Institute of Patent and Trade Mark Attorneys

More information

United States Patent and Trademark Office. Patent Trial and Appeal Board

United States Patent and Trademark Office. Patent Trial and Appeal Board United States Patent and Trademark Office Patent Trial and Appeal Board PTAB Organization Statutory Members of the Board The Board is created by statute (35 U.S.C. 6). 35 U.S.C. 6(a) provides: There shall

More information

Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense

Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense September 16, 2011 Practice Groups: IP Procurement and Portfolio Management Intellectual Property Litigation Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense On September

More information

Strategic Use of Post-Grant Proceedings In Light of Patent Reform

Strategic Use of Post-Grant Proceedings In Light of Patent Reform Strategic Use of Post-Grant Proceedings In Light of Patent Reform October 11, 2011 The Leahy-Smith America Invents Act U.S. House of Representatives passed H.R. 1249 (technical name of the bill) on June

More information

Last Month at the Federal Circuit

Last Month at the Federal Circuit Last Month at the Federal Circuit Special Edition Federal Circuit Restricts Patent Protection Available to Business Methods and Signal Claims Under 35 U.S.C. 101 In two decisions issued September 20, 2007,

More information

Guidebook. for Japanese Intellectual Property System 2 nd Edition

Guidebook. for Japanese Intellectual Property System 2 nd Edition Guidebook for Japanese Intellectual Property System 2 nd Edition Preface This Guidebook (English text) is prepared to help attorneys-at-law, patent attorneys, patent agents and any persons, who are involved

More information

Criteria for Patentability

Criteria for Patentability 2 Criteria for Patentability Patentability Criteria v Formality Examination Documents required Procedural requirements v Substantive Examination Unity of invention Patent eligibility Novelty Inventive

More information

America Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition

America Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition America Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition Dave Cochran Jones Day Cleveland December 6, 2012 Part 1: Impact on Litigation Strategy

More information

U.S. Patent Law Reform The America Invents Act

U.S. Patent Law Reform The America Invents Act U.S. Patent Law Reform The America Invents Act August 15, 2011 John B. Pegram Fish & Richardson What s New in 2011? Patent Law Reform is high on Congressional agenda A desire to legislate Bipartisan Patent

More information

Accelerating the Acquisition of an Enforceable Patent: Bypassing the USPTO s Backlog Lawrence A. Stahl and Seth E. Boeshore

Accelerating the Acquisition of an Enforceable Patent: Bypassing the USPTO s Backlog Lawrence A. Stahl and Seth E. Boeshore Accelerating the Acquisition of an Enforceable Patent: Bypassing the USPTO s Backlog Lawrence A. Stahl and Seth E. Boeshore The U.S. Patent and Trademark Office (USPTO) dockets new patent applications

More information

News and analysis on IP law, regulation and policy from around the world. For the latest updates, visit

News and analysis on IP law, regulation and policy from around the world. For the latest updates, visit WORLD INTELLECTUAL PROPERTY REPORT >>> News and analysis on IP law, regulation and policy from around the world. For the latest updates, visit www.bna.com International Information for International Business

More information

United States Court of Appeals for the Federal Circuit

United States Court of Appeals for the Federal Circuit United States Court of Appeals for the Federal Circuit IN RE SHUNPEI YAMAZAKI 2012-1086 (Serial No. 10/045,902) Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences.

More information

Post-Grant Patent Proceedings

Post-Grant Patent Proceedings Post-Grant Patent Proceedings The Leahy-Smith America Invents Act (AIA), enacted in 2011, established new post-grant proceedings available on or after September 16, 2012, for challenging the validity of

More information

Reexamination, Reissue, Certificate of Correction and New America Invents Act Proceedings: Substantive and Strategic Overview

Reexamination, Reissue, Certificate of Correction and New America Invents Act Proceedings: Substantive and Strategic Overview Reexamination, Reissue, Certificate of Correction and New America Invents Act Proceedings: Substantive and Strategic Overview Eugene T. Perez, Esq. Birch, Stewart, Kolasch & Birch, LLP February 3, 2012

More information

JETRO seminar. Recent Rule change and latest developments at the EPO:

JETRO seminar. Recent Rule change and latest developments at the EPO: JETRO seminar Recent Rule change and latest developments at the EPO: Alfred Spigarelli Director Patent procedures management DG1 Business services EPO Düsseldorf 4 November, 2010 Overview RAISING THE BAR

More information

Summary of AIA Key Provisions and Respective Enactment Dates

Summary of AIA Key Provisions and Respective Enactment Dates Summary of AIA Key Provisions and Respective Enactment Dates Key Provisions for University Inventors First-Inventor-to-File 3 Effective March 16, 2013 Derivation Proceedings (Challenging the First-to-File)

More information

Patents and the Protection of Proprietary Biotechnology Information

Patents and the Protection of Proprietary Biotechnology Information Patents and the Protection of Proprietary Biotechnology Information Susan Haberman Griffen Anna Tsang Finnegan, Henderson, Farabow, Garrett & Dunner, LLP May 20, 2005 Page 1 2005 DISCLAIMER These materials

More information

Accelerated Examination. Presented by Hans Troesch, Principal Fish & Richardson P.C. March 2, 2010

Accelerated Examination. Presented by Hans Troesch, Principal Fish & Richardson P.C. March 2, 2010 Accelerated Examination Presented by Hans Troesch, Principal Fish & Richardson P.C. March 2, 2010 Overview The Basics Petition for accelerated examination Pre-examination search Examination Support Document

More information

A Guide To Filing A Design Patent Application. Prepared by I.N. Tansel from pac/design/toc.

A Guide To Filing A Design Patent Application. Prepared by I.N. Tansel from   pac/design/toc. A Guide To Filing A Design Patent Application Prepared by I.N. Tansel from http://www.uspto.gov/web/offices/ pac/design/toc.html#improper Definition of a Design A design consists of the visual ornamental

More information

New Patent Application Rules Set to Take Effect November 1, 2007

New Patent Application Rules Set to Take Effect November 1, 2007 INTELLECTUAL PROPERTY October 2007 New Patent Application Rules Set to Take Effect November 1, 2007 The United States Patent and Trademark Office (USPTO) has issued new rules for the patent application

More information

America Invents Act: Patent Reform

America Invents Act: Patent Reform America Invents Act: Patent Reform Gunnar Leinberg, Nicholas Gallo, and Gerald F. Gibbs, Jr. LeClairRyan January 4 th 2012 gunnar.leinberg@leclairryan.com; nicholas.gallo@leclaairryan.com; and gerald.gibbs@leclairryan.com

More information

Abstract. Keywords. Kotaro Kageyama. Kageyama International Law & Patent Firm, Tokyo, Japan

Abstract. Keywords. Kotaro Kageyama. Kageyama International Law & Patent Firm, Tokyo, Japan Beijing Law Review, 2014, 5, 114-129 Published Online June 2014 in SciRes. http://www.scirp.org/journal/blr http://dx.doi.org/10.4236/blr.2014.52011 Necessity, Criteria (Requirements or Limits) and Acknowledgement

More information

John R. Nelson, Roy H. Wepner, Robert B. Cohen, Lerner, David, Littenberg, Krumholz & Mentlik, Westfield, NJ, for Plaintiff.

John R. Nelson, Roy H. Wepner, Robert B. Cohen, Lerner, David, Littenberg, Krumholz & Mentlik, Westfield, NJ, for Plaintiff. United States District Court, D. New Jersey. DATASCOPE CORP, Plaintiff. v. ARROW INTERNATIONAL, INC, and Arrow International Investment Corp. Defendants. No. CIV A 00-3200 DRD Aug. 17, 2001. John R. Nelson,

More information

USPTO Post Grant Trial Practice

USPTO Post Grant Trial Practice Bill Meunier, Member Michael Newman, Member Peter Cuomo, Of Counsel July 18, 2016 Basics: Nomenclature "IPRs" = Inter partes review proceedings "PGRs" = Post-grant review proceedings "CBMs" = Post-grant

More information

DEVELOPMENTS IN CLAIM CONSTRUCTION

DEVELOPMENTS IN CLAIM CONSTRUCTION The University of Texas School of Law 16th ANNUAL ADVANCED PATENT LAW INSTITUTE DEVELOPMENTS IN CLAIM CONSTRUCTION October 27-28, 2011 Austin, Texas Kenneth R. Adamo* Kirkland & Ellis LLP 300 N. LaSalle

More information

America Invents Act (AIA) Post-Grant Proceedings. Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck

America Invents Act (AIA) Post-Grant Proceedings. Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck America Invents Act (AIA) Post-Grant Proceedings Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck What is included in Post-Grant Reform in the U.S.? Some current procedures are modified and some new ones

More information

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION CONTENTGUARD HOLDINGS, INC., Plaintiff, v. AMAZON.COM, INC., et al., Defendants. CONTENT GUARD HOLDINGS, INC., Plaintiff,

More information

International Prosecution Strategy after Therasense: What You Need to Know Now

International Prosecution Strategy after Therasense: What You Need to Know Now International Prosecution Strategy after Therasense: What You Need to Know Now Shawn Gorman and Christopher Swickhamer, Banner & Witcoff, Ltd. I. Introduction The Plague of Inequitable Conduct Allegations

More information

PATENT PROSECUTION HIGHWAY

PATENT PROSECUTION HIGHWAY PATENT PROSECUTION HIGHWAY William Chung Scully, Scott, Murphy & Presser, PC 400 Garden City Plaza, Suite 300 Garden City, NY 11530 516-742-4343 intprop@ssmp.com Overview of Requirements for PPH 2.0 (1)

More information

Are all pending claims now indefinite? Robert A. Schwartzman, Ph.D.

Are all pending claims now indefinite? Robert A. Schwartzman, Ph.D. Are all pending claims now indefinite? Robert A. Schwartzman, Ph.D. The Board of Patent Appeals and Interferences has recently instituted a major shift in United States Patent and Trademark Office (USPTO)

More information

Preamble: viewer providing a 3D effect changed to viewer 4 screen divided into at least two portions retained

Preamble: viewer providing a 3D effect changed to viewer 4 screen divided into at least two portions retained Paper C 207, Part A - Marking Guide [70 pts] C Claims 50 pts Independent claim amendments - 36 pts Note: if an essential feature is instead introduced in a new dependent claim, part marks will be given

More information

Post-Grant for Practitioners

Post-Grant for Practitioners Part XII: Inter Partes Review Highlights From the First Year+ Dorothy Whelan and Karl Renner Principals and Co-Chairs of Post-Grant Practice Webinar Series January 8, 2014 Agenda @FishPostGrant I. Overview

More information

How Bilski Impacts Your Patent Prosecution and Litigation Strategies. MIP Inaugural China-International IP Forum June 30, 2010, Beijing

How Bilski Impacts Your Patent Prosecution and Litigation Strategies. MIP Inaugural China-International IP Forum June 30, 2010, Beijing How Bilski Impacts Your Patent Prosecution and Litigation Strategies MIP Inaugural China-International IP Forum June 30, 2010, Beijing Presenters Esther H. Lim Managing Partner, Shanghai Office Finnegan,

More information